Ex Parte FENG et al

Patent Trial and Appeal Board

Sep 14, 2018

13739109 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/739, 109 01/11/2013 Ganjiang FENG
13152 7590 09/14/2018
McNees Wallace & Nurick LLC
100 Pine Street
P.O. Box 1166
Harrisburg, PA 17108-1166
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
256245/22113-0088 8447
EXAMINER
WU,JENNYR
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
09/14/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GANJIANG FENG, MICHAEL DOUGLAS ARNETT,
MATTHEW J. LAYLOCK, SHAN LIU, and
JINGXIAN ZHANG
Appeal2017-009448
Application 13/739,109
Technology Center 1700
Before MICHAEL P. COLAIANNI, JENNIFERR. GUPTA, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1--4, 6-8, and 10-22. 2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the applicant, General Electric Company. According to the
Appeal Brief, the real parties in interest are the inventors and the applicant,
General Electric Company. Appeal Brief filed March 10, 2017 ("App.
Br."), 1.
2 Final Office Action entered August 31, 2016 ("Final Act.").
Appeal2017-009448
Application 13/739,109
STATEMENT OF THE CASE
Appellant claims a nickel-based alloy (independent claim 1 ), a turbine
bucket comprising an alloy (independent claim 11 ), and a turbine nozzle
comprising an alloy (independent claim 16). Claim 1 illustrates the subject
matter on appeal and is reproduced below with contested language italicized:
1. A nickel-based alloy, comprising, by weight:
between 0.8% and 1.1 % hafnium, between about 5.7%
and about 6.4% aluminum, between about 7.0% and about
10.0% cobalt, up to about 0.1% carbon, up to about 8.7%
chromium, up to about 0.6% molybdenum, up to about 9.7%
tungsten, up to about 0.9% titanium, up to about 0.02% boron,
up to about 0.1 % manganese, up to about 0.06% silicon, up to
about 0.01 % phosphorus, up to about 0.004% sulfur, up to
about 0.02% zirconium, up to about 1.8% niobium, up to about
0.1 % vanadium, up to about 0.1 % copper, up to about 0.2%
iron, up to about 0.003% magnesium, up to about 0.002%
oxygen, up to about 0.002% nitrogen, and a balance nickel;
wherein the alloy includes a gamma prime fraction of
greater than about 50% at 1800°F and is devoid of
topologically-close-packed phases.
App. Br. 14 (Claims Appendix) (emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action, and maintains the rejections in the Examiner's Answer entered
April 28, 2017 ("Ans."):
I. Claims 1-3, 6, 7, 10, 21, and 22 under 35 U.S.C. § 103(a)
as unpatentable over Tamaki et al. (US 7,169,241 B2, issued
January 30, 2007);
II. Claims 4 and 8 under§ 103(a) as unpatentable over Tamaki as
evidenced by admitted prior art; and
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Application 13/739,109
III. Claims 11-20 under 35 U.S.C. § 103(a) as unpatentable over
Tamaki as evidenced by admitted prior art.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's timely contentions, 3 we affirm the Examiner's rejections
of claims 1--4, 6-8, and 10-22 under 35 U.S.C. § 103(a) for the reasons set
forth in the Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence Appellant provides for each issue Appellant
identifies. 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d 1072,
107 5 (BP AI 2010) (precedential), cited with approval in In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the examiner
had failed to make a prima facie case, "it has long been the Board's practice
to require an applicant to identify the alleged error in the examiner's
rejections").
Rejection I
Claims 1-3, 6, 7, 10, and 22
Appellant argues claims 1-3, 6, 7, 10, and 22 as a group on the basis
of claim 1, to which we accordingly limit our discussion. App. Br. 4--1 O;
37 C.F.R. § 4I.37(c)(l)(iv).
3 We do not consider any new argument Appellant raises in the Reply Brief
that Appellant could have raised in the Appeal Brief. 37 C.F.R.
§ 4I.37(c)(l)(iv); 37 C.F.R. § 4I.41(b)(2) (arguments raised for the first
time in the Reply Brief that could have been raised in the Appeal Brief will
not be considered by the Board unless good cause is shown).
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Application 13/739,109
Appellant does not dispute the Examiner's finding that Tamaki
discloses a nickel-based alloy that comprises the same components as the
nickel-based alloy recited in claim 1 in amounts that overlap the
corresponding ranges recited in claim 1. Compare Final Act. 3--4, with App.
Br. 4--10. The Examiner finds that Tamaki does not explicitly disclose that
the nickel-based alloy described in the reference includes a gamma prime
fraction of greater than about 50% at 1800°F, and is devoid oftopologically-
close-packed phases, but the Examiner interprets these features recited in
claim 1 as "structure and property limitations of [the] claimed product."
Final Act. 4. The Examiner determines that because Tamaki's nickel-based
alloy comprises the same components as the nickel-based alloy recited in
claim 1 in amounts that overlap the corresponding ranges recited in the
claim, Tamaki's nickel-based alloy "would necessarily possess the claimed
structure and property." Final Act. 4--5.
Appellant argues that Tamaki discloses "wide ranges of
compositions" and " broad ranges" that "encompass alloys having a variety
of compositional phases and a variety of physical properties so as to be
unreasonable and of very little meaning or relevance to Applicant's alloy of
claim 1." App. Br. 7.
However, Tamaki discloses a nickel-based alloy that comprises the
components recited in claim 1, and Tamaki's alloy includes amount of
hafnium, aluminum, and cobalt that encompass the ranges of these
components recited in claim 1. Abstract; col. 3, 11. 28-35. Inclusion of the
remaining components recited in claim 1 in the claimed nickel-based alloy is
optional by virtue of the recitation that these components are present in
amounts "up to" particular percentages. In re Mochel, 470 F.2d 638, 640
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Application 13/739,109
(CCPA 1972) (explaining that the term "up to" includes zero as a lower
limit.). Nevertheless, Tamaki discloses amounts for these remaining
components that overlap the ranges recited in claim 1. Abstract; col. 3,
11. 28-35. Accordingly, the nickel-based alloy disclosed in Tamaki renders
the nickel-based alloy of claim 1 prima facie obvious, regardless of the
breadth of the compositions and ranges disclosed in Tamaki. In re Peterson,
315 F.3d 1325, 1329-30 (Fed. Cir. 2003) ("In cases involving overlapping
ranges, we and our predecessor court have consistently held that even a
slight overlap in range establishes a prima facie case of obviousness ....
Selecting a narrow range from within a somewhat broader range disclosed in
a prior art reference is no less obvious than identifying a range that simply
overlaps a disclosed range. In fact, when, as here, the claimed ranges are
completely encompassed by the prior art, the conclusion is even more
compelling than in cases of mere overlap."); see also Merck & Co., Inc. v.
Biocraft Labs, 874 F.2d 804, 807 (Fed. Cir. 1989) (The fact that a reference
"discloses a multitude of effective combinations does not render any
particular formulation less obvious."); In re Corkill, 771 F.2d 1496, 1500
(Fed. Cir. 1985) (An obviousness rejection was affirmed in light of a prior
art teaching that "hydrated zeolites will work" in detergent formulations,
even though "the inventors selected the zeolites of the claims from among
'thousands' of compounds".)
Because Appellant does not demonstrate the criticality of the ranges
recited in claim 1 (App. Br. 4--10), Appellant's arguments are unpersuasive
of reversible error. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)
(indicating that in cases in which the difference between the claimed
invention and the prior art is some range or other variable within the claims,
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the applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range.).
Appellant argues that "Tamaki does not disclose, teach, or suggest
'wherein the alloy includes a gamma prime fraction of greater than about
50% at 1800°F and is devoid of topologically-close-packed phases"' as
recited in claim 1. App. Br. 7. Appellant contends that the Examiner's
analysis and conclusions regarding these features of the nickel-based alloy
of claim 1 are erroneous because the gamma prime mole fraction of an alloy
and the presence or absence of topologically close packed phases in the alloy
are not properties per se, but are structural features of an alloy that
contribute to the alloy's ultimate properties. App. Br. 8. Appellant further
asserts that the phases of an alloy "are a characteristic of the composition of
the alloy, not necessarily a characteristic of how the alloy has been made."
Reply Br. 2.
However, as discussed above, the Examiner acknowledges that
Tamaki does not explicitly disclose that the nickel-based alloy described in
the reference includes a gamma prime fraction of greater than about 50% at
1800°F, and is devoid of topologically-close-packed phases, but the
Examiner determines that Tamaki's nickel-based alloy would necessarily
possess these features because Tamaki's nickel-based alloy comprises the
same components as the nickel-based alloy recited in claim 1 in amounts
that overlap the corresponding ranges recited in the claim.
Although Appellant asserts that the gamma prime fraction of an alloy,
and the presence or absence of topologically close packed phases in the
alloy, are structural features of an alloy, Appellant admits that the phases of
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an alloy are a characteristic of the composition of the alloy. Accordingly,
Appellant implicitly acknowledges that the gamma prime fraction of an
alloy (the amount of the gamma prime phase in the alloy), and the presence
or absence of topologically close packed phases in the alloy, are determined
by the composition of the alloy.
Appellant does not direct us to any disclosure in Appellant's
Specification demonstrating that the features of including a gamma prime
fraction of greater than about 50% at 1800°F, and being devoid of
topologically-close-packed phases, are additional requirements for the
nickel-based alloy imposed by claim 1, rather than a property ( or structural
feature) of a nickel-based alloy having a composition as recited in claim 1,
and we find no such disclosure in Appellant's Specification. For example,
we find no disclosure in Appellant's Specification of a nickel-based alloy
having a composition as recited in claim 1 that does not have a gamma
prime fraction of greater than about 50% at 1800°F, and is not devoid of
topologically-close-packed phases.
Accordingly, Appellant's arguments are unpersuasive of error in the
Examiner's determination that Tamaki's nickel-based alloy would possess a
gamma prime fraction and topologically-close-packed phases as recited in
claim 1 due to the fact that Tamaki's nickel-based alloy comprises the same
components as the nickel-based alloy recited in claim 1 in amounts that
overlap the corresponding ranges recited in the claim. Titanium Metals
Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985) ("The proportions [of
the metallic elements in the alloy] are so close that prima facie one skilled in
the art would have expected them to have the same properties."); In re
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Application 13/739,109
Spada, 911 F.2d 705, 709 (Fed. Cir. 1990) (explaining that a chemical
composition and its properties are inseparable).
As discussed more fully below, Appellant does not meet his burden of
demonstrating that nickel-based alloys disclosed in Tamaki do not possess a
gamma prime fraction as recited in claim 1, and are not devoid of
topologically-close-packed phases as recited in claim 1. App. Br. 4--1 O; In
re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations omitted) (Where ...
the claimed and prior art products are identical or substantially identical, or
are produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product. Whether the
rejection is based on 'inherency' under 35 U.S.C. § 102, on 'prima facie
obviousness' under 35 U.S.C. § 103, jointly or alternatively, the burden of
proof is the same, and its fairness is evidenced by the PTO's inability to
manufacture products or to obtain and compare prior art products.)
Appellant argues that "Tamaki teaches an alloy with a gamma phase
as the continuous phase and a gamma-prime phase as a lesser phase in the
alloy, indicating that the alloy described by Tamaki does not have a gamma
prime fraction greater than 50%." Reply Br. 2; App. Br. 7-8.
However, Appellant does not provide a citation to this asserted
disclosure in Tamaki of "a gamma phase as the continuous phase and a
gamma-prime phase as a lesser phase in the alloy," and we find no such
disclosure in the reference. Appellant's assertions thus amount to
unsupported attorney arguments, which cannot take the place of evidence
necessary to resolve a disputed question of fact. See, e.g., Icon Health &
Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017)
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Application 13/739,109
("[ a ]ttomey argument is not evidence" and cannot rebut other admitted
evidence); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's
argument in a brief cannot take the place of evidence.").
Appellant argues that Exhibit A, which was filed June 17, 2016,
demonstrates that "the alloys of Tamaki do not necessarily have the same
properties as the alloys of claim 1" because Exhibit A "demonstrates that at
least one alloy composition outside Applicant's range of claim 1 but within
Tamaki's alloy compositions does not have a gamma prime fraction of
greater than about 50% at 1800 °F and is not devoid of topologically-close-
packed phases." App. Br. 8-9; Exhibit A, pages 7 and 8.
However, the composition described in Exhibit A as the "Tamaki
composition" contains amounts of hafnium, cobalt, chromium, tungsten,
titanium, and niobium that are outside the ranges of these components
recited in claim 1. Exhibit A, pages 7 and 8. Accordingly, Exhibit A does
not demonstrate that nickel-based alloys disclosed in Tamaki-that include
components as recited in claim 1 in amounts that fall within the ranges
recited in the claim----do not have the same properties as the alloys of
claim 1. Therefore, Appellant does not meet his burden of demonstrating
that nickel-based alloys disclosed in Tamaki do not possess a gamma prime
fraction as recited in claim 1, and are not devoid of topologically-close-
packed phases as recited in claim 1. Best, 562 F.2d at 1255 (CCPA 1977).
Therefore, considering the totality of the evidence relied-upon in this
appeal, a preponderance of the evidence weighs in favor of the Examiner's
conclusion of obviousness. We accordingly sustain the Examiner's rejection
of claims 1-3, 6, 7, 10, 21, and 22 under 35 U.S.C. § 103(a).
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Claim 21
Claim 21 depends from claim 1 and recites that the alloy has a gamma
prime solvus temperature greater than 2230°F.
The Examiner interprets the recited solvus temperature as a property
of the claimed product, and determines that because Tamaki's nickel-based
alloy comprises the same components as the nickel-based alloy recited in
claim 1 in amounts that overlap the corresponding ranges recited in the
claim, Tamaki's nickel-based alloy would necessarily possess the claimed
property. Final Act. 6.
Appellant argues that the "third page of Exhibit A shows the gamma
prime fraction and the gamma prime solvus temperature of various
compositions, including compositions which fall within the range taught by
Tamaki that had a gamma prime solvus temperature less than or equal to
2230 °F. Therefore, the alloys of Tamaki do not necessarily have the same
properties as the alloys of claim 21." App. Br. 10.
However, Appellant does not direct us to a description of the
components ( and their amounts) in the "various compositions" whose
gamma prime fraction and gamma prime solvus temperature are shown
graphically on the third page of Exhibit A. Accordingly, the data presented
on the third page of Exhibit A does not demonstrate that nickel-based alloys
disclosed in Tamaki-that include components as recited in claim 1 in
amounts that fall within the ranges recited in the claim----do not have a
gamma prime solvus temperature as recited in claim 21. We accordingly
sustain the Examiner's rejection of claim 21 under 35 U.S.C. § 103(a).
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Rejections II and III
To address these rejections, Appellant relies on the arguments made
for claim 1 ( discussed above), and argues that the additional reference
applied in these rejections (admitted prior art) fails to cure the deficiencies
of Tamaki ("does not provide what Tamaki lacks"). App. Br. 10-12.
Because we are unpersuaded of reversible error in the Examiner's rejection
of claim 1 for the reasons discussed above, Appellant's position as to these
rejections is also without merit.
DECISION
We affirm the Examiner's rejections of claims 1--4, 6-8, and 10-22
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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